Luxottica Group is taking BCBG Max Azria Group to court to defend its Wayfarer business.
The trademark infringement suit, filed this week in Los Angeles federal court, alleges that BCBG has been, without permission, “reproducing, copying, or colorably imitating the [Wayfarer trademark] and applying such reproductions, copies or colorable imitations to merchandise, labels, signs, packages, receptacles or advertisements intended to be used in commerce.”
Luxottica acquired Ray-Ban and the Wayfarer trademark in 1999 and has sought to bring out more of its rock ‘n’ roll vibe and also allowed customers to personalize the look.
The sunglasses line, which Bausch & Lomb Optical Company secured a trademark for in 1954, has appealed to successive generations, worn by Dan Aykroyd and John Belushi in “The Blues Brothers” and Tom Cruise in “Risky Business.”
BCBG representatives were not available to comment Thursday, but a search of Amazon.com found styles such as “BCBGMaxazria Women’s B853 Wayfarer Sunglasses” for $79 and “BCBGMaxazria Women’s Date Night Wayfarer Sunglasses” for $132.
“Over the years Luxottica has invested a considerable amount of time and money in establishing the [Wayfarer trademark] in the minds of consumers as a source of high-quality eyewear,” the suit said. “As a result of Luxottica’s substantial use and promotion of the [Wayfarer] in connection with the eyewear and other products, the mark has acquired great value as a specific identifier of Luxottica’s products.”
The Italian eyewear giant, which products Ray-Bans and scores of other branded glasses, said BCBG was “using its infringing mark in an attempt to associate its eyewear products with Luxottica and the [Wayfarer trademark], to cause mistake or deception as to the source of defendant’s eyewear products and/or to otherwise trade upon Luxottica’s valuable reputation and customer goodwill in its mark.”
Luxottica said the trademark is being diluted and asked for an injunction against BCBG barring the company and its employees from Wayfarer. The company also asked the court to determine what profits BCBG has made from the “infringement, unfair competition, dilution and false designation of origin” and that it be awarded monetary damages.